Bekaert v Siltronic & Anor (UPC_CFI_539/2024)
Decision date:
19 November 2025
Osborne Clarke summary
- Bekaert is a Chinese company and is the sole proprietor of the patent relating to saw wires in force in Germany, Austria and Italy. Bekaert filed an application for an order to inspect the premises of and preserve evidence relating to the two respondents, Siltronic (a German based manufacturer and distributor of silicon wafers for the semiconductor industry that purchases saw wires from Bekaert and another Chinese company) and Hinterberger (a German based logistics company that provides storage space to Siltronic for the saw wires it uses).
- The Düsseldorf LD granted an order to inspect the premises of the respondents and to preserve evidence in advance of the main action. However, this order also provided for the protection of the respondents' confidential information, including their trade secrets. Following the inspection, the expert report was submitted on 11 February 2025.
- The respondents requested that the court declare certain information in the expert report inadmissible, for example, all information relating to the dependent claims in Bekaert's patent, the prices charged or paid for saw wires and the quantity ordered, and information about properties of the saw wires. Alternatively, the respondents requested that the court restrict access to that information to a small number of Bekaert's representatives. The respondents based their application on Article 58 UPCA, which concerns the protection of trade secrets, personal data or other confidential information of a party or third party.
- The Düsseldorf LD interpreted Article 58 UPCA to mean that it had discretion whether to order that the information was inadmissible at this stage of the proceedings, for example by redacting certain portions of the expert's report.
- In deciding whether to exercise its discretion, the court had to first consider whether the information constituted a trade secret, contained personal data or contained other confidential information. If this was the case, the information would have to be redacted if it was irrelevant to the question of infringement or possible acts of use within the meaning of Article 25 UPCA, because it would not be related to the case at all. However, if the information related to the question of infringement and/or scope of acts of use, the court would have to make a decision in each individual case whether to disclose the information to the applicant, who would be obliged to maintain confidentiality with respect to third parties, and whether the information should only be disclosed to a limited number of persons.
- In this case, the Düsseldorf LD decided that the prices paid for the saw wires and the volume purchased constituted the respondents' trade secrets. The products were not publicly traded and therefore not known to direct competitors. The respondents had taken steps to protect this information – the information was kept in an IT system that was only accessibly by a limited number of people. There was also a confidentiality agreement between the respondents that protected the information. In any event, the information was deemed not relevant to the question of infringement and therefore the court ordered that it be redacted.
- Customers' bank details were held to be confidential information, but irrelevant to the question of infringement. Thus, the court ordered for that information to be redacted. Other information in the expert's report, such as details about the products and the expert's opinion on the dependent claims, was not deemed to be confidential and therefore was ordered to be disclosed.
- As per Article 60(8) UPCA and Rule 198(1) and 199(2) RoP, Bekaert had no more than 31 calendar days or 20 working days (whichever was longer) after the expert's opinion had been disclosed to bring an action on the merits, otherwise the inspection and evidence preservation order would be revoked or cease to have effect.
Issue
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